CAFC vacates PTAB decision in In re Taylor Made Golf; PTAB needs to pay attention to Wikipedia
The issue on appeal is whether the U.S. Patent and
Trademark Office’s (PTO) Patent Trial and Appeals Board
erred in not rejecting on grounds of obviousness claims
8, 9, 12, and 13 of U.S. Patent No. 7,344,450 (the ’450 patent).
These claims are directed to a method involving press fitting or latching
weights to a golf club.
Because the Board erroneously failed to consider
the general knowledge possessed by one skilled in the art of press
fitting in applying the obviousness standard, we vacate
the Board’s decision and remand for further proceedings
We find that the Board was obligated to consider whether it would
have been obvious to utilize press fitting even though the
prior art did not disclose the use of press fitting for the
specific purpose of the invention (...)
There is no question here that press
fitting as a means of attachment was common knowledge at the time
of the invention.
Wikipedia is mentioned:
quoted a Wikipedia
article (which is itself
indicative of common knowledge)
on press fitting as being “[with]in the knowledge
of one of ordinary skill in the art,” App. 144
(Piotrowski Decl.¶¶ 72– 73); see also, e.g. ,
Vistan Corp. v. Fadei USA, Inc.,
547 F. App’x 986, 990
(Fed. Cir. 2013) (relying in part on
an expert’s invocation of Wikipedia
to determine what a person of ordinary skill in the art
would understand a term to mean as part of a written description inquiry).
A 1961 CCPA case is brought up as evidence:
In addition to this evidence,
In re Dulberg, 289 F.2d 522 (C.C.P.A. 1961), was cited to the Board
and further illustrates that press fitting was well known
as a means to attach parts of a device, and has been so at least since
In fact, press fitting was not just well-known at the
time of Dulberg ; it was so well-known that our predecessor court
found that “[n]o specific prior art teaching would
be necessary to show that operation.” Id.at 523.